Rob Garner wearing Google Glass
In July 2013, Google “originally submitted the application in July 2013 for the word “Glass” styled in a particular font as branding for its Google Glass smart glasses. The USPTO responded in the fall, saying there are two problems with trademarking “Glass.”,” according to arstechnica. Arstechnica goes on to say that the USPTO had responded to their original trademark application saying that there was a problem with it. “The first is that the word is “merely descriptive” and that the product does not actually contain any glass (it’s made of titanium and plastic). Second, the word is too similar to pre-existing trademarks, making confusion “as to the source of the goods” likely, the USPTO said.”
Trying to trademark a “generic” keyword phrase like the word “Glass” is, in fact, similar to other generic keywords that have been attempted to be trademarked. For example, The Atlantic mentions some interesting attempts by other companies:
Apple has tried to trademark the word “startup.”
Apple and Amazon have faced off in court over the use of the term “app store.”
Amazon has successfully filed for trademarks for the terms “Prime,” “I want one!,” “of note,” “look inside,” and “Earth’s biggest.”
Facebook has tried to trademark the word “book.”
Facebook has successfully trademarked “F,” “Face,” “FB,” and “Wall.” Oh, and also “Facepile.”
Instagram has tried to stop other apps from using “Insta,” “Gram,” and “IG.”
Microsoft has trademarked the word “haunt.”
Twitter has trademarked the word “tweet.”
In the March 20, 2014 filed trademark document, Google emphasized the fact that there is no likelihood of confusion amongst consumers.
“Finally, while the Examiner indicates that Applicant’s Stylized Mark may be confusingly similar to certain marks pending registration, Applicant respectfully submits that these applications, for the reasons set forth below, also should not preclude registration.
I. THERE IS NO LIKELIHOOD OF CONFUSION
A. Likelihood of Confusion Factors
The question of likelihood of confusion between marks is “related not to the nature of the mark but to its effect “when applied to the goods of the applicant”. The only relevant application is made in the marketplace. The words “when applied” do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark…. In determining whether there is a likelihood of confusion, courts look at to many factors, including:
– The number and nature of similar markets in use on similar goods or services;
– The similarity or dissimilarity and nature of the goods or services such that one party’s goods will be mistaken for those of the other party;
– The channels of distribution of the goods or services;
– The sophistication of the purchasers of the goods or services;
– The similarity or dissimilarity of the marks in their entirety; and
– The nature and extent of any actual confusion.”
Do you think Google should be granted a trademark on the word “Glass”?